To: | Manzo, Anthony, Robert, Martin (LauraSmithTMesq@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88110525 - NEW YORK NEW YORK - N/A |
Sent: | 12/10/2018 6:21:55 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88110525
MARK: NEW YORK NEW YORK
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Manzo, Anthony, Robert, Martin
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 12/10/2018
SEARCH OF OFFICE’S DATABASE OF MARKS
SUMMARY OF ISSUES:
SECTIONS 1, 2, AND 45 REFUSAL—MERELY ORNAMENTAL
Whether a designation functions as a mark depends on the commercial impression it makes on the relevant public; that is, whether purchasers would likely regard it as a source-indicator for the goods. See In re Keep A Breast Found., 123 USPQ2d 1869, 1879 (TTAB 2017) (quoting In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010)); TMEP §1202. The specimen and any other relevant evidence of use is reviewed to determine whether an applied-for mark is being used as a trademark. In re Bose Corp., 546 F.2d 893, 897, 192 USPQ 213, 216 (C.C.P.A. 1976); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).
In this case, the mark as shown on the specimen would be perceived as merely a decorative or ornamental feature of the goods because the mark appears across the entire face of the goods in a place that is easily viewable when the goods are in use. Consumers are likely to view he mark on the goods as a decorative feature—not as a source-indicating feature. The attached internet evidence shows that this is an area where design or other ornamental elements often appear on the applied-fore goods. http://www.popsockets.com/products/ghost-marble?variant=12722475696215&gclid=Cj0KCQiAurjgBRCqARIsAD09sg_82qlvWQkag7EgEIeVIugQ1JEzqaEPfJNEvdXBBEGClPsvU75QuJsaAheUEALw_wcB&gclsrc=aw.ds; http://www.amazon.com/PopSockets-Collapsible-Tablets-Pineapple-Pattern/dp/B01L1DSNYE/ref=asc_df_B01L1DSNYE/?tag=hyprod-20&linkCode=df0&hvadid=312067196837&hvpos=1o28&hvnetw=g&hvrand=12376334565735693017&hvpone=&hvptwo=&hvqmt=&hvdev=c&hvdvcmdl=&hvlocint=&hvlocphy=9061285&hvtargid=pla-404919652442&psc=1; http://www.ebay.com/p/James-Harden-Basketball-Mobile-Phone-Holder-Hand-Grip-Stand-Mount/3026287565?iid=202511411673&chn=ps.
Accordingly, the mark, as used on the specimen, is merely ornamental, and registration is refused under Sections 1, 2, and 45 of the Trademark Act.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and (b) shows proper trademark use for each international class identified in the application or amendment to allege use.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark has allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
For an overview of the response options above and instructions on how to satisfy each option online using the Trademark Electronic Application System (TEAS) form, see the Ornamental Refusal webpage.
DISCLAIMER REQUIRED
The wording in applicant’s mark appears to be an intentional misspelling of NEW YORK NEW YORK. Applicant must disclaim the wording “NEW YORK NEW YORK” because it is not inherently distinctive. The unregistrable term is at best primarily geographically descriptive of the origin of applicant’s goods. See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
The attached evidence from Wikipedia shows that NEW YORK NEW YORK is the generally known geographic place or location of New York City, New York. http://en.wikipedia.org/wiki/New_York,_New_York_(disambiguation); http://en.wikipedia.org/wiki/New_York_City. See TMEP §§1210.02 et seq. The goods for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address—which is in Brooklyn, a borough within New York City. See TMEP §1210.03. Because the goods originate in this place or location, a public association of the goods and/or services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
The wording as it appears in the mark must appear in its correct spelling, i.e., “NEW YORK NEW YORK” in the disclaimer. See In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009); TMEP §1213.08(c).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “NEW YORK NEW YORK” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
AMENDMENT TO MARK DESCRIPTION REQUIRED
The following description is suggested, if accurate: The mark consists of a circular design resembling a manhole cover bearing the wording "NEW YORK NEW YORK" in a circular format separated by a five point star and utilizing a common first letter "N".
CLARIFICATION OF APPLICANT’S NAME REQUIRED
Applicant’s name contains four elements with a comma separating each element in the record. Applicant must clarify his name to make it clear which names are applicant’s first, middle, and last names.
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
Robert N. Guliano
/Robert N. Guliano/
Examining Attorney
Law Office 105
571-272-0174
robert.guliano@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.